Posts in IPWatchdog Articles

Earlier this week, the U.S. Patent and Trademark Office (USPTO) suspended the sponsored accounts of two U.S. attorneys who loaned their name and bar credentials to an Indian law firm so they could file trademark submissions in violation of USPTO rules. The Indian firm used the names of the American attorneys to pose as U.S.-based attorneys and represent clients in trademark registration. The accounts were suspended for violating the Trademark Verified Account Agreement. The USPTO removed the attorneys’ authorization to sponsor attorney support staff accounts on the USPTO.gov system. The USPTO sent the two attorneys, Julian Haffner of YK Law and Grace Lee Huang of Meritech Law, letters in September notifying them of the violations and resulting suspension.

There is a reason many stakeholders believe the Patent Trial and Appeal Board (PTAB) has been weaponized against patent owners. From the very outset, the first Chief Judge of the PTAB famously, or infamously, stated that if the tribunal was not doing some “death squadding” they were not doing their jobs; a rebuke to then Federal Circuit Chief Judge Randall Rader’s observation that the PTAB was nothing more than a death squad for patents. But from those early days where patent owners were not even allowed to submit evidence to rebut a petition at the institution stage, to the unbelievable lapse in ethical judgment of one former PTAB judge, there have been numerous reasons to question the tribunal.

There is a surge of protests in the air and increased cries of “structural bias” concerning the Patent Trial and Appeal Board’s (PTAB’s) granting of patent reviews, fueled by the July report issued by the U.S. Government and Accountability Office (GAO) revealing that 75% of surveyed PTAB judges said that control by office directors and Board management affected their autonomy.

Lawyers should always be trying to look at things from new and different angles to gain an edge. We owe it to our clients, and honestly, we should do it for ourselves, because it makes practicing more fulfilling. In an effort to spice up my patent law life, I have become especially interested in patent analytics over the past few years—that’s right, I just used “patent analytics” and “spice up” in the same sentence.

In a much-anticipated decision, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a precedential Director review ruling holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings and “temporarily elevating Intel to the lead petitioner.” Vidal’s 52-page decision further remands the case to the Patent Trial and Appeal Board (PTAB) to decide whether it merits institution “based only on the record before the Board prior to institution.” The decision explains that “OpenSky, through its counsel, abused the IPR process by filing this IPR in an attempt to extract payment from VLSI and joined Petitioner Intel, and expressed a willingness to abuse the process in order to extract the payment.”

The Federal Circuit’s denial of en banc rehearing and the Supreme Court’s denial of certiorari review mean the decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), is the latest word on subject-matter eligibility under 35 U.S.C. § 101. In American Axle, the Federal Circuit applied the Supreme Court’s two-part Alice/Mayo test to hold a method for manufacturing driveline propeller shafts with liners designed to attenuate vibrations invalid as directed to a use of a natural law. The Federal Circuit characterized the claims as simply “[c]laiming a result” without “limiting the claim to particular methods of achieving the result. . . .”  Id. at 1295. The method claims were directed to nonpatentable subject matter because, even though neither the claims nor the specification explicitly referenced a natural law, the method steps required the application of a natural law, “and nothing more.”  Id. at 1297. Although the panel in American Axle stressed its decision was consistent with Supreme Court and Federal Circuit precedent, see 967 F.3d 1295, 1296 (“Our cases as well have consistently rejected such claims as unpatentable.”), its rationale, literally applied, jeopardizes broad categories of patent claims that have traditionally been considered patent-eligible subject matter.

The U.S. District Court for the Eastern District of New York unsealed multiple documents last week that named the kingpins behind an alleged counterfeit HIV medication conspiracy. An unsealed amended complaint filed in late September names the two alleged kingpins as Lazaro Roberto Hernandez and Armando Herrera, both of Florida. The two “kingpin defendants” are accused of being “at the head of the conspiracy” and “career criminals who organized the conspiracy and controlled the flow of the counterfeits, all while operating from the shadows and using extensive measures to conceal their identities.” Hernandez was identified by basic geolocation data associated with burner phones used to communicate details about the conspiracy.

The United States Patent and Trademark Office (USPTO) announced today that it is seeking comment from the public on “proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while facilitating the broader dissemination of public knowledge to promote innovation and competition.” During IPWatchdog’s LIVE event in Dallas, Texas, in September, USPTO Texas Regional Office Director Hope Shimabuku explained that issuing “robust and reliable patents”—which seems to have replaced the oft-maligned term, “patent quality,”—is a key focus for USPTO Director Kathi Vidal. The request for comment (RFC) tackles this problem from a number of angles, from fee-setting to terminal disclaimer and continuation practices, to improving prior art searches. The RFC stems in part from a July letter sent by the USPTO to the Food and Drug Administration (FDA) outlining the USPTO’s planned initiatives to help combat perceived links between patents and drug pricing problems.

On September 26, Licensing Executives Society (LES) USA and Canada published the LES High Tech Sector Royalty Rates & Deal Terms Survey Report 2021. In May of this year, the 2021 Global Life Sciences Royalty Rates and Deal Terms Survey results were released. Together, the releases culminated the intense efforts by LES during the COVID-19 pandemic in preparing and launching the Surveys and in analyzing the data, presenting the results and writing the Reports. Not only do LES Royalty Survey Reports provide an update on the licensing market in the past few years, they look into the dynamics of market evolution since the 2000s. The Reports offer benchmark royalty data by various categories, such as technology field and IP type, which serve as invaluable references for licensing professionals. The 2021 High Tech Survey Report is also the only data source in the IP industry that quantifies and publishes royalty rate premiums or discounts such as exclusivity premium and advanced-stage technology premium. Through identifying and quantifying the value contributions of key license parameters such as exclusivity, technology development stage and IP type, among others, the LES team aims to develop a build-up method for royalty determination, analogous to the build-up method in business valuation.

This week in Washington IP news, both houses of Congress are silent as they enter scheduled work periods but the Hudson Institute and the American Enterprise Institute host conversations with Chris Miller, the author of Chip Wars: The Fight for the World’s Most Critical Technology. Another Hudson Institute event with Federal Trade Commission Commissioner Noah Phillips explores what the proper role is for the United States’ top antitrust enforcement agency in regulating the tech sector, while the U.S. Patent and Trademark Office hosts a presentation exploring alternative dispute resolution proceedings available at the WIPO Center for resolving disputes over standard essential patents.

In Part I of this series, we discussed  the importance of identifying and avoiding patentability-blocking ambiguities in a patent application. It is equally important that the patent application drafter bring a sensibility to the drafting of the application that recognizes that conceptually the application must not  simply be seen as a document whose job is to describe an invention but must also be understood to be a document that must have a descriptive capability that enables it to distinguish patent worthy subject matter from prior art. Thus, when the patentability of patent worthy subject matter disclosed by the application is challenged, the application can speak—it is able to defend its patentability. This capability is essential in both pre and post grant forums.

Patent claims define the boundaries of an invention and are meant to state with clarity what the patent protects. Having clearly constructed claims also proves valuable during infringement assertions. These well-known guidelines should be at the forefront of the patent practitioner’s mind when drafting solid-form claims. Patent attorneys practicing in the chemical arts use two primary methods of claiming chemical compounds. The first method relies on chemical nomenclature to describe a claimed chemical compound. Take for example, the drug Wakix® (U.S. Patent No. 7,169,928), in which the active ingredient, pitolisant, is claimed to reference its chemical name without drawing a corresponding structure. The second method claims the drawn chemical structure of a compound. Of course, there are intermediate ways to claim chemical compounds where both names and structure are used to define the scope — especially with genus and sub-genus claims.

On Friday afternoon, the IEEE Standards Association Board of Governors (IEEE SA BOG) announced they had taken action to update the Patent Policy for IEEE standards development. The updates, which will not go into effect until January 1, 2023, appear at first glance to be minimal, but will likely have an extraordinarily positive impact for patent owners.

This week in Other Barks & Bites: Chief Justice Roberts of the U.S. Supreme Court signs an order staying the Federal Circuit’s mandate invalidating Novartis’ patent claims covering the MS treatment Gilenya; the U.S. Copyright Office issues a final rule simplifying remitter payment and deposit account requirements; the Federal Circuit denies a petition for mandamus relief to transfer a patent case out of Western Texas over Judge Lourie’s dissent regarding concerns over remote workers; the U.S. House of Representatives passes the SBIR and STTR Extension Act to extend those two seed funding programs through fiscal year 2025; Micron announces a 50 percent reduction in wafer fab equipment capital expenditures to address high chip inventory issues; and Senator Chris Coons announces that he will co-sponsor Senator Thom Tillis’ patent eligibility act.

District court and Patent Trial and Appeal Board (PTAB) filings were both down substantially this week, with 57 and 15, respectively, and 91 district court terminations. The drop-off of patent filings in the Western District of Texas has perhaps not been as pronounced as might be expected, though obviously most of those cases are being assigned to other judges there, or continuations of defendants being added to suits already within the Waco court’s jurisdiction. The Traxcell campaign continued to spiral, with many new defendants added; ditto the Hilco capital-led Bell Semiconductor case, which added an even more diverse list of defendants to the already-long roster. Otherwise most suits this week, with the exception of a few highlighted below, are related to earlier-filed suits.